Opposition by Jemie BV to extension of protection of International Registration 1364835 (41) (Australian trade mark application 1872942) – CANNATECH – held by ICAN Israel-Cannabis Ltd
[2020] ATMO 148
•2 September 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Jemie BV to extension of protection of International Registration 1364835 (41) (Australian trade mark application 1872942) – CANNATECH – held by ICAN Israel-Cannabis Ltd
Delegate: Robert Wilson
Representation: Opponent: Spruson & Ferguson
Holder: Sparke Helmore-Lawyers
Decision: 2020 ATMO 148
Trade Marks Act 1995 (Cth): Regulation 17A.33 opposition: s 44 established – IRDA – refusal to extend protection of international registration to Australia
Background
1. Trade mark number 1872942 is the Australian designation of a request made under the Madrid Protocol by ICAN Israel-Cannabis Ltd (‘the Holder’) to extend protection of the trade mark subject of International Registration 1364835 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the IRDA brought by Jemie BV (‘the Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:
IRDA:
1872942
International Registration:
1364835
Filing Date:
19 January 2017
Services:
Class 41: Arranging and conducting of conventions; organisation of exhibitions, conventions and conferences for cultural or educational purposes; arranging and conducting of conferences, conventions, educational exhibitions, classes, lectures, seminars and training workshops; providing on-line training seminars; educational consultancy; educational services; arranging of educational conferences; event planning for social, cultural or educational purposes
(‘the Holder’s Services’)
Trade Mark:
CANNATECH
(‘the Holder’s Trade Mark’)
2. Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.
3. Following the advertisement in the Australian Official Journal of Trade Marks of the IRDA’s acceptance on 2 November 2017, the Opponent filed a Notice of Opposition (‘the Notice’) consisting of a Notice of Intention to Oppose on 2 January 2018 and a Statement of Grounds and Particulars (‘the SGP’) on 2 February 2018. The Holder filed a Notice of Intention to Defend on 5 April 2018. The SGP raised grounds of opposition pursuant to ss 42(b), 44, 60 and 62A. On 5 March 2018, a Notification Of Provisional Refusal Of Protection Based On An Opposition was sent to the World Intellectual Property Organisation (‘WIPO’).
Evidence
4. The Opponent filed Evidence in Support (‘EIS’) of its opposition which consists of:
Declaration made on 9 July 2018 by Jeroen Emanuel Yvonne Bots, the director of the Opponent, with Exhibits 1 to 13 (‘the Bots declaration’).
5. Following the filing of the EIS, the parties requested, and were granted, a cooling-off period and an extension to the cooling-off period. The cooling-off period expired on 4 October 2019. The Applicant was given three months from date to file evidence in answer. The Applicant did not file any evidence.
6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. The Opponent requested to be heard. A hearing was scheduled for 20 August 2020. It fell to me, as a delegate of the Registrar of Trade Marks, to hear the matter.
7. In line with the usual practice, the parties were provided with a schedule, according to which they were required to provide a written summary of their submissions prior to the hearing. The Applicant was given the opportunity to appear at the hearing or rely on written submissions only. Prior to the hearing date, the Applicant indicated that it neither wished to appear at the hearing nor file written submissions. The Opponent filed its written submissions in accordance with the schedule. The Opponent’s submissions were prepared by its representatives, Spruson & Ferguson. In the end, the Opponent chose to rely on its written submissions only. Accordingly, the hearing was vacated.
8. The opposition is to be decided as required by reg 17A.34N which relevantly provides that, unless the proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all the goods or services listed in the IRDA; or
(b)To extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
The Opponent
9. According to the Bots declaration:
[The Opponent] was founded in The Netherlands in 1993 and trades under the names CANNA and BIOCANNA.
[The Opponent] has been involved in the research, manufacture and sale of nutrients and growing mediums for the cultivation of fast growing plants for decades. Over the years [the Opponent] has been awarded prizes for its revolutionary plant products and is now recognised as a world leader in intelligent plant technologies for cultivating plants in cocoponics, hydroponics and potting mix.
The Opponent is the owner of a number of Australian trade mark registrations including the one detailed below:
Trade Mark Number:
890561
Priority Date:
28 September 2001
Goods and services:
7 classes, including:
Class 41: Education; providing of training; entertainment, sporting and cultural activities
(‘the Opponent’s Services’)
Trade Mark:
CANNA (‘the Opponent’s Trade Mark’)
The Holder
There is nothing before me from which I might provide a background of the Holder other than what appears in the IRDA. The IRDA indicates that the Holder is based in Israel.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition pursuant to ss 42(b), 44, 60 and 62A. It is necessary that the Opponent establish only one ground of opposition to successfully oppose the IRDA. As will become apparent it is necessary only that I consider the ground pursuant to s 44 in this decision.
The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard of ‘on the balance of probabilities’.[2] The date at which the rights of the parties are to be determined is the filing date of the application. The filing date here being 19 January 2017 (‘the Relevant Date’).[3] The filing date is also the priority date for the grounds of opposition pursuant to ss 44 and 60.
Discussion
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
Grounds for rejecting and opposing IRDAs
Regulation 17A.28 relevantly states:
(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).
(2)Sections 39 to 44 apply in relation to an IRDA as if:
(a)a reference in those sections:
(i)to an application for the registration of a trade mark were a reference to the IRDA; and
(ii)to an applicant were a reference to the holder of the IRDA; and
(b)…
(c)each reference in subparagraphs 44(1)(a)(i) and (2)(a)(i) to a trade mark registered by another person included a protected international trade mark held by another person; and
(d)each reference in subparagraphs 44(1)(a)(ii) and (2)(a)(ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person. …
Regulation 17A.34 relevantly states:
(1)The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically. …
Section 44
Relevant provisions of s 44 are reproduced below:
Section 44 - Identical etc. trade marks
…
Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In the SGP the Opponent nominated a number of trade marks including the Opponent’s Trade Mark. As will be seen, the Opponent has established this ground of opposition in respect of the Opponent’s Trade Mark; it is necessary, therefore, to consider only that trade mark.
A finding that a ground of opposition pursuant to s 44 is established is subject to the provisions of ss 44(3) and (4). In this matter, the Holder has provided no evidence and no submissions. As a result, there is nothing before me which satisfies me that either of those provisions apply. Accordingly, to successfully oppose the IRDA the Opponent need only establish that the Opponent’s Trade Mark:
· is registered by a person other than the Holder (‘the first requirement’); and
· has a priority date which is earlier than the Relevant Date (‘the second requirement’);
· is in respect of at least some services which are similar to the Holder’s Services (‘the third requirement’); and
· is substantially identical with or deceptively similar to the Holder’s Trade Mark (‘the fourth requirement’).
The first requirement
The Opponent is a person other than the Holder. The first requirement is, therefore, satisfied.
The second requirement
The Opponent’s Trade Mark has a priority date which is earlier than the Relevant Date. The second requirement is, therefore, satisfied.
The third requirement
With respect to the third requirement the Opponent submitted:
There can be no dispute that the services covered by [the IRDA] are the same as, or of the same description to, [the Holder’s Services].
[The Holder’s Services] are all educational, training and/or social/cultural activities and related services.
I concur with the Opponent’s characterisation of the Holder’s Services. The Opponent’s Services can also be characterised as educational, training and/or social/cultural activities. I am satisfied that the Opponent’s Services are similar to the Holder’s Services. The third requirement is, therefore, satisfied.
The fourth requirement
Deceptively Similar?
Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]
[4] [1963] HCA 66, [13].
Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[5]
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[6]
Third, allowance must be made for imperfect recollection.[7]
Fourth, the effect of the spoken description must be considered.[8]
Fifth, it is necessary to show a real tangible danger of deception or confusion.[9]
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[10] …
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[11]
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[12]
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[13] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[14] [15]
[5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[6] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).
[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].
[8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).
[13] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].
[14] Ibid [100].
[15] [2012] FCA 1022, [37]–[46].
It is apparent that the Opponent’s Trade Mark is wholly contained within the Holder’s Trade Mark. The Opponent has submitted:
The CANNA element clearly retains its identity when considering [the Holder’s Trade Mark]. Further, the addition of the non-distinctive element TECH does little, if anything, to add to the overall mark and to distinguish it from [the Opponent’s Trade Mark]. Whilst the presence of the descriptive element should not be discounted when comparing the marks, it is well accepted that less attention should be paid to this element.
In the present case the Holder’s Trade Mark wholly incorporates the Opponent’s Trade Mark along with the addition of the abbreviation ‘tech’. This alone is not sufficient to make the trade marks deceptively similar. In some cases, a trade mark conveys an overall conceptual meaning which is sufficiently different to another trade mark which is contained within it such that the trade marks are not deceptively similar. For example, REBELLION vs SOUL REBELLION[16] and JOCKEY vs THROTTLE JOCKEY.[17] These examples can be distinguished from the present case in that the second trade mark of each pair is significantly different, conceptually, visually and aurally, from the first of the pair. However, in this instance the addition of the ‘tech’ element does not create a trade mark which has an overall sufficiently significant conceptual difference, given the visual and aural similarities. I am persuaded by the Opponent’s submissions and am satisfied that the Opponent’s Trade Mark is deceptively similar to the Holder’s Trade Mark. The fourth, and final, requirement is satisfied. All four requirements have been satisfied; the Opponent has, therefore, established this ground of opposition.
[16] Kingsley v Scott [2011] ATMO 10.
[17] Jockey International Inc v Wilkinson [2010] ATMO 22.
Decision
I have found that the Opponent has established the ground of opposition it raised pursuant to s 44. As a delegate of the Registrar I accordingly refuse to extend protection of the Holder’s Trade Mark to Australia. In accordance with reg 17A.34N(2), WIPO will be notified of the Registrar’s decision.
Costs
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I award costs against the Holder under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Robert Wilson
Hearing Officer
Trade Mark and Designs Hearings
2 September 2020
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